Lee-Anne Berns
Law Office 105
Comissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451

Re: Non-Final Office Action dated May 7, 2007

Mark: PROULX
Applicant: Riley, Kevin P.
Serial No.: 77081567
Filed: January 12, 2007

In the above referenced Office Action the Examining Attorney refuses registration of the Mark
Proulx under U.S.C. §1052(e)(4), on the basis it is “primarily merely a surname.” Applicant
respectfully disagrees with this assertion, and argues as follows.

Applicant’s Mark PROULX is not primarily merely a surname. The Examining Attorney has
“the burden of establishing a prima facie case that [PROULX and design] is ‘primarily merely
a surname.’” In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652, 653
(Fed.Cir.1985). Furthermore, ‘“the question of whether a [mark] sought to be registered is
primarily merely a surname within the meaning of the statute can be resolved only on a case by
case basis,’ taking into account a number of various factual considerations.” In re Benthin
Management GmbH, 37 USPQ2d 1332, (TTAB 1995) (citing Darty et Fils, 225 USPQ at 653).

The question of whether a term is primarily merely a surname depends on the primary
significance to the purchasing public. TMEP §1211.01 (citing Ex parte Rivera Watch Corp.,
106 USPQ 145, 149 (Comm’r Pats. 1955)). The Trademark Trial and Appeal Board has
identified five factors to be considered in making this determination:

(1) whether the surname is rare;
(2) whether the term is the surname of anyone connected with the Applicant;
(3) whether the term has any recognized meaning other than as a surname;
(4) whether it has the “look and feel” of a surname; and
(5) whether the stylization of lettering is distinctive enough to create a separate
commercial impression.

TMEP §§1211.01(a) et seq.; In re Benthin Management GmbH, at 1333-1334.

Four of these five factors weigh in Applicant’s favor that the Mark is not primarily merely a
surname.

Rareness
Proux is a rare surname. This is confirmed by the dictionary source, OneLook.com, cited in
the Office Action, which states under the “Quick definitions” of the Mark, that the surname
Proulx is “rare: 1 in 50,000 families.”

Connected with the Applicant
Proulx is not the surname of the Applicant. Moreover, Proulx is not the surname of any person
associated with the winemaking business for which Applicant is seeking to register the Mark in
conjunction with.

Any Recognized Meaning Other Than as a Surname
Applicant is not currently aware of any meaning other than a surname for the Mark in the
English language. However the Mark has meaning in a foreign language, namely the French
language, which is addressed with respect to the Doctrine of Foreign Equivalents below.

“Look and Feel” of the Surname
Notwithstanding that they are surnames, certain rare surnames do not have the appearance of
surnames. In re Industrie Pirelli, 9 USPQ2d 1564, 1566 (TTAB 1988); Sava, 32 USPQ2d at
1381. Where these are involved, even in the absence of non-surname significance, a
reasonable application of the test of “primary significance to the purchasing public” could
result in a finding that such a surname, when used as a mark, would be perceived as arbitrary or
fanciful. In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000).

The Mark is derived from the French language. Applicant asserts that the majority of the
American population is not fluent in the French language so as to distinguish the Mark as a
surname from that of a noun, verb, adverb, or other general word comprising the French
language. Consequently, due to its perceptible French language origins, the Mark would be
perceived as arbitrary or fanciful.

Further, Applicant’s Mark is specifically used as a brand for Applicant’s wines. Wine has
strong associations to France, as the county is one of the oldest wine producing regions in
Europe. http://en.wikipedia.org/wiki/French_wine. Thus, Applicant asserts that the “look and
feel” of the Mark is not a surname, but rather, an arbitrary or fanciful French word that is being
used as a brand for specific wines. Applicant submits Exhibit A, attached hereto, illustrating
the use of the French word “Chamarré” for a brand of French wine, to exemplify the existence
of such similar use of an arbitrary or fanciful French word used as a brand of wine.

Stylization of Lettering
A mark comprised of a word that, standing by itself, would be considered primarily merely a
surname, but which is coupled with a distinctive stylization or design element, is not
considered primarily merely a surname. In re Benthin Management GmbH, at 1334. In Benthin
the Board found that the use of “an enlarged ‘T’ which overhangs the first ‘N’ and ‘H’” was
sufficient to render the mark “highly stylized” so that “it would not be perceived as primarily
merely a surname.” When taken in consideration that the mark was also rare and did not have a
“clear look and sound of a surname.” Id.

In the instant case, as shown in the specimen submitted with Applicant’s application, the Mark
is highly stylized by its use of a fanciful script for the first letter of the Mark “P”, which first
letter is also significantly larger than the remaining letters.

In sum, given the rareness of the Mark PROULX as a surname, the fact that it is not connected
with the Applicant, that it does not have the “look and feel” of a surname, and is presented in a
highly stylized manner, the Mark would not be perceived as primarily merely a surname.
Furthermore, in conjunction with the above factors which were persuasive to a finding in the
applicant’s favor in Benthin, the Examining Attorney should consider the Benthin Board’s
dicta: “on the question of whether a mark would be perceived as primarily merely a surname,
we are inclined to resolve doubts in favor of the applicant and pass the mark to publication
with the knowledge that others who have the same surname and use it or wish to use it for the
same or similar goods or services can file a notice of opposition.” Id.

For the foregoing reasons, Applicant respectfully requests that the Examining Attorney permit
Applicant’s Mark to proceed to publication.